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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`PO. Box 1450
`Alexandria, Virginia 2231371450
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`15/427,380
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`02/08/2017
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`BUNZI MIZUNO
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`PIPMM-57200
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`4267
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`759°
`52°“
`PEARNE & GORDON LLP
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`04’0””
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`1801 EAST 9TH STREET
`SUITE 1200
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`CLEVELAND, OH 44114-3108
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`CULBERT, CHRISTOPHER A
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`2815
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`PAPER NUMBER
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`NOTIFICATION DATE
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`DELIVERY MODE
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`04/02/2019
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`ELECTRONIC
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`Please find below and/or attached an Office communication concerning this application or proceeding.
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`The time period for reply, if any, is set in the attached communication.
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`Notice of the Office communication was sent electronically on above—indicated "Notification Date" to the
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`following e—mail address(es):
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`patdoeket@pearne.eom
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`PTOL-90A (Rev. 04/07)
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`

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`0,7709 A0170” Summary
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`Application No.
`15/427,380
`Examiner
`CHRISTOPHERACULBERT
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`Applicant(s)
`MIZUNO et al.
`Art Unit
`2815
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`AIA (FITF) Status
`Yes
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`- The MAILING DA TE of this communication appears on the cover sheet wit/7 the correspondence address -
`Period for Reply
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`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE g MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR 1.136(a). In no event, however, may a reply be timely filed after SIX (6) MONTHS from the mailing
`date of this communication.
`|f NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
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`Status
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`1). Responsive to communication(s) filed on 02/28/2019.
`[:1 A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2a). This action is FINAL.
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`2b) C] This action is non-final.
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`3)[:] An election was made by the applicant in response to a restriction requirement set forth during the interview on
`; the restriction requirement and election have been incorporated into this action.
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`4)[:] Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Expat/7e Quay/e, 1935 CD. 11, 453 O.G. 213.
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`Disposition of Claims*
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`5)
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`Claim(s) fl is/are pending in the application.
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`5a) Of the above claim(s) 2 is/are withdrawn from consideration.
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`E] Claim(s)
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`is/are allowed.
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`Claim(s) 1 and 3—4 is/are rejected.
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`E] Claim(s) _ is/are objected to.
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`) ) ) )
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`6 7
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`8
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`
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`are subject to restriction and/or election requirement
`[:1 Claim(s)
`9
`* If any claims have been determined allowable, you may be eligible to benefit from the Patent Prosecution Highway program at a
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`participating intellectual property office for the corresponding application. For more information, please see
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`http://www.uspto.gov/patents/init events/pph/index.'sp or send an inquiry to PPeredback@uspto.gov.
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`Application Papers
`10):] The specification is objected to by the Examiner.
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`11):] The drawing(s) filed on
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`is/are: a)C] accepted or b)Ej objected to by the Examiner.
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`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
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`Priority under 35 U.S.C. § 119
`12)C] Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
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`a)C] All
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`b)C] Some**
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`c)C] None of the:
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`1C] Certified copies of the priority documents have been received.
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`2C] Certified copies of the priority documents have been received in Application No.
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`3.[:] Copies of the certified copies of the priority documents have been received in this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
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`** See the attached detailed Office action for a list of the certified copies not received.
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`Attachment(s)
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`1)
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`Notice of References Cited (PTO-892)
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`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mail Date_
`U.S. Patent and Trademark Office
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`3) C] Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) CI Other-
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`PTOL-326 (Rev. 11-13)
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`Office Action Summary
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`Part of Paper No./Mai| Date 20190323
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`

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`Application/Control Number: 15/427,380
`Art Unit: 2815
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`Page 2
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`DETAILED ACTION
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`Notice of Pre-AIA or AIA Status
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`The present application, filed on or after March 16, 2013, is being examined under the first
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`inventor to file provisions of the AIA.
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`This Office Action is in response to Amendments filed 02/28/2019.
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`Claim Rejections - 35 USC § 103
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`The text of those sections ofTitle 35, U.S. Code not included in this action can be found in a
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`prior Office action.
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`Claims 1, 3, and 4 is/are rejected under 35 U.S.C.103 as being unpatentable over Tischler (US
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`2013/0328172 A1) in view of Carney (US 2016/0064282 A1) and Ko et al. (US 5,817,579).
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`Tischler discloses a method for manufacturingan element chip, comprising:
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`a step of preparing a substrate (Fig. 2A) which has a first main surface (top surface in Fig. 2A)
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`and a second main surface (bottom surface in Fig. 2A) and includes a first layer (10) that is a
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`semiconductor layer(1i 0038), a second layer (40) including an insulating film (1] 0038) formed on a side
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`of the first main surface ofthe first layer (see Fig. 2A), a plurality of element regions (corresponding to
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`20), and a dividing region (region between areas corresponding to 20) for defining each ofthe element
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`regions;
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`a laser dicing step (Fig. 3; 1] 0045) of dividing the substrate to a plurality ofelement chips
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`including the element regions by irradiating the dividing region with laser light from the side ofthe first
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`main surface, in a state where the second main surface is supported by a supporting member (310) and
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`forming a damaged region ofthe substrate (sidewalls of 20) on an end surface of each ofthe element
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`chips.
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`Tischler does not disclose a protection film stacking step. However forming protection films on
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`the sides of singulated element chips is well-known in the art (protection film 136 in Fig. 6 of Carney).
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`

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`Application/Control Number: 15/427,380
`Art Unit: 2815
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`Page 3
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`Carney discloses that having such a protection film is advantageous in that it reduces the likelihood of
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`unwanted electrical shorting on the side surfaces (1] 0004 of Carney). It would have been obvious to one
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`having ordinary skill
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`in the art to use a protection film as disclosed by Carney for the device produced by
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`the method of Tischler for this obvious benefit.
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`To form such a protection film, Carney discloses performing a protection film stacking step of
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`stacking a protection film on the top and side surfaces of the element chips (1] 0029; these surfaces
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`would correspond to on the first main surface and the end surfaces of each of the element chips
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`including the damaged region in the method of Tischler). Carney discloses performing this step afterthe
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`singulation ofthe elements (1] 0029; corresponding to afterthe laser dicing step of Tischler). Carney
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`further discloses a protection film etching step (1] 0029) of removing the protection film stacked on the
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`top surface (corresponding to the first main surface of Tischler) by etching the protection film
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`anisotropically (1] 0029), afterthe protection film stacking step and remaining the protection film for
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`covering the side surfaces (corresponding to the damaged regions of Tischler).
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`Carney discloses that the protection layeris a fluorocarbon polymer and the anisotropic etch is a
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`dry etch (1] 0029) but does not disclose what kind of dry etch. However, it is known in the art to dry etch
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`fluorocarbon polymers using a plasma etching (”RIE”; Col. 11 Lines 41-56 of Ko et al.). There is a benefit
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`to using such a plasma etching process as RIE is a high resolution drying etching process. With no other
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`guidance as to what kind of dry etch to perform, it would have been obvious to one having ordinary skill
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`in the art to perform the dry etch of Carney with a plasma etching as disclosed by K0 et al. for this
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`benefit.
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`Regarding claim 3, Carney discloses that the protection film stacked in the protection film
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`stacking step contains fluorocarbon (1] 0020).
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`Regarding claim 4, Carney does not specifically disclose that the protection film stacking step
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`and the protection film etching step are performed in a same reaction chamber. However, Carney does
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`Application/Control Number: 15/427,380
`Art Unit: 2815
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`Page4
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`disclose that the protection film stacking step can occur in a same reaction chamber as a plasma etching
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`step (1] 0019). There is a benefit to using the same reaction chamberfor both steps in that it avoids the
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`need to purchase additional chambers. It would have been obvious to one having ordinary skill in the art
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`at the time ofthe invention to use the same reaction chamberfor the protection film stacking step as
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`the protection film etching step for this benefit.
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`Response to Arguments
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`Applicant’s arguments with respect to claim 1 have been considered but are moot because the
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`arguments do not apply toany ofthe references being used in the current rejection.
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`Conclusion
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`Applica nt's amendment necessitated the new ground(s) of rejection presented in this Office
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`action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the
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`extension oftime policy as set forth in 37 CFR 1.136(a).
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`A shortened statutory period for reply to this final action is set to expire THREE MONTHSfrom
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`the mailing date of this action.
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`In the event a first reply is filed within TWO MONTHSof the mailing date
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`of this final action and the advisory action is not mailed until afterthe end of the THREE-MONTH
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`shortened statutory period, then the shortened statutory period will expire on the date the advisory
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`action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing
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`date of the advisory action.
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`In no event, however, will the statutory period for reply expire later than
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`SIX MONTHSfrom the date ofthis final action.
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`Any inquiry concerning this communication or ea rliercommunications from the examiner
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`should be directed to CHRISTOPHERACULBERT whose telephone number is (571)272-4893. The
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`examiner can normally be reached on M-F, 9-5.
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`

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`Application/Control Number: 15/427,380
`Art Unit: 2815
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`Page 5
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`/C.A.C/
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`Examiner, Art Unit 2815
`
`/TUCKERJWR|GHT/
`Primary Examiner, Art Unit 2891
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`